Wireless Recognition Technologies LLC v. A9.com, Inc. et al

Filing 122

Opposed MOTION for Leave to File Supplemental Brief Addressing the Impact of the Dismissal of Ricoh Entities on Defendants' Motion to Transfer re 62 Opposed MOTION to Change Venue to the U.S. District Court for the Northern District of California Pursuant to 28 U.S.C. § 1404(a)Opposed MOTION to Change Venue to the U.S. District Court for the Northern District of California Pursuant to 28 U.S.C. § 1404(a)Opposed MOTION to Change Venue to the U.S. District Court for the Northern District of California Pursuant to 28 U.S.C. § 1404(a) by A9.com, Inc., Amazon.com, Inc., Google, Inc.,, Nokia, Inc.. (Attachments: # 1 Exhibit A, # 2 Text of Proposed Order)(Smith, Michael)

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
WIRELESS RECOGNITION
TECHNOLOGIES LLC,
Plaintiff,
vs.
A9.COM, INC., AMAZON.COM, INC.,
GOOGLE INC., NOKIA, INC., and
RICOH INNOVATIONS, INC.,
Defendants.

WIRELESS RECOGNITION
TECHNOLOGIES LLC,
Plaintiff,
vs.
NOKIA CORPORATION and RICOH
COMPANY, LTD.,
Defendants.

WIRELESS RECOGNITION
TECHNOLOGIES LLC,
Plaintiff,
vs.
A9.COM, INC., AMAZON.COM, INC.,
GOOGLE INC., NOKIA, INC., and
RICOH INNOVATIONS, INC.,
Defendants.

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Civil No. 2:10-CV-00364-JRG

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Civil No. 2:10-CV-00365-JRG

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Civil No. 2:10-CV-00577-JRG

WIRELESS RECOGNITION
TECHNOLOGIES LLC,
Plaintiff,
vs.
NOKIA CORPORATION and RICOH
COMPANY, LTD.,
Defendants.

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Civil No. 2:10-CV-00578-JRG

DEFENDANTS’ SUPPLEMENTAL BRIEF ADDRESSING THE
IMPACT OF THE DISMISSAL OF RICOH INNOVATIONS, INC.
AND RICOH COMPANY, LTD. ON THEIR MOTIONS TO TRANSFER
Defendants A9.com, Inc., Amazon.com, Inc., Google Inc., Nokia Inc., and Nokia
Corporation respectfully submit this brief to address the impact that the dismissals of Ricoh
Innovations, Inc. (“RII”) and Ricoh Company, Ltd. (“RCL”) from the above-captioned cases
have on Defendants’ pending motions to transfer (Dkt. Nos. 62 (2:10-cv-364), 21 (2:10-cv-365),
52 (2:10-cv-577), and 39 (2:10-cv-578)).
On March 23, 2011, all of the Defendants in the -364 case, including RII, moved to
transfer that case to the Northern District of California for the reasons set forth in Dkt. Nos. 62
and 73. All of the Defendants in the -365, -577, and -578 cases subsequently filed motions to
transfer those cases for the same reasons. At the time those motions were filed, RII was a
defendant in the -364 and -577 cases, and RCL was a defendant in the -365 and -578 cases.
Thus, in Defendants’ supporting papers they addressed the Ricoh employees as party witnesses
that were located in the proposed transferee venue.
On January 5, 2012, however, plaintiff Wireless Recognition Technologies, Inc.
(“WRT”) moved to dismiss RII from the -364 and -577 cases and RCL from the -365 and -578

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cases. On January 9, the Court granted those motions. Those dismissals created a material
change in fact regarding the pending motions to transfer because several RII employees, and in
particular Jonathan Hull, are now relevant third-party witnesses (as opposed to party witnesses)
located in the proposed transferee forum.
Despite the dismissal of RII, several RII employees remain relevant witnesses in these
cases because of their contributions to the prior art. In their invalidity contentions, Defendants
relied upon five patents on which RII employees are named inventors – U.S. Patent Nos.
5,465,353, 5,867,597, 6,104,834, 6,397,213, and 6,671,684. (See Ex. 1 at p. 5.) On the face of
each of those patents, all of the inventors are identified as resident in the Northern District of
California.1 Defendants also relied upon a prior art publication by three of those same inventors
as invalidating prior art. (Id. at p. 6 (“Document Image Matching Techniques”).) And most
significantly, Defendants identified one of those inventors and authors, Jonathan Hull, as a prior
inventor of WRT’s claimed inventions (id. at p. 7.), and in the supporting claim chart,
Defendants cited to pages from Mr. Hull’s notebook to corroborate his prior invention.
Now that the Ricoh entities have been dismissed from the four actions, the RII employees
are no longer employees of a defendant in this matter. Rather, the RII employees, and in
particular Mr. Hull, are now highly relevant third-party witnesses who are not subject to the
subpoena power of this Court. By contrast, those witnesses are subject to the subpoena power of
the Northern District of California and could be compelled to testify at trial.
Thus, Defendants contend that the dismissal of RII and RCL has merely strengthened
their motions to transfer, and respectfully request that the Court grant those motions.
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While one of the Ricoh prior art patents indicates that inventor Jonathan Hull resides in
New York, the later-filed patents reflect that he moved to the Northern District of California.
This fact is reflected by RII’s declaration in support of the motion to transfer, which identifies
Mr. Hull as resident in the Northern District of California. (See Dkt. No. 62, Exhibit E at ¶ 6.)

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Dated: January 31, 2012

Respectfully submitted,

/s/ Michael C. Smith
Michael C. Smith
[e-mail]
Texas State Bar No. 18650410
SIEBMAN, BURG, PHILLIPS & SMITH, LLP
P.O. Box 1556
Marshall, TX 75671-1556
Telephone: [phone]
Facsimile: 972.767.4620
James F. Valentine (admitted pro hac vice)
[e-mail]
California State Bar No. 149269
Daniel T. Shvodian (admitted pro hac vice)
[e-mail]
California State Bar No. 184576
Perkins Coie LLP
3150 Porter Drive
Palo Alto, CA 94304-1212
Telephone: [phone]
Facsimile: 650.838.4350
Attorneys for Defendants and
Counterclaimants
A9.COM, INC., AMAZON.COM, INC., and
GOOGLE INC.

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/s/ Michael C. Smith
Michael C. Smith
[e-mail]
Texas State Bar No. 18650410
SIEBMAN, BURG, PHILLIPS & SMITH, LLP
P.O. Box 1556
Marshall, TX 75671-1556
Telephone: [phone]
Facsimile: 972.767.4620
Robert F. Perry (admitted pro hac vice)
Allison H. Altersohn (admitted pro hac vice)
KING & SPALDING LLP
1185 Avenue of the Americas
New York, NY 10036
Telephone: [phone]
Facsimile: 212.556.2222
E-mail: [e-mail]
E-mail: [e-mail]
Attorneys for Defendant
NOKIA INC. and NOKIA CORPORATION

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CERTIFICATE OF SERVICE
The undersigned certifies that the foregoing document was filed electronically in
compliance with Local Rule CV-5(a). As such, this document was served on all counsel who are
deemed to have consented to electronic service. Local Rule CV-5(a)(3)(A). Pursuant to Fed. R.
Civ. P. 5(d) and Local Rule CV-5(d) and (e), all other counsel of record not deemed to have
consented to electronic service were served with a true and correct copy of the foregoing by
email, on this 31st day of January, 2012.
/s/ Michael C. Smith
Michael C. Smith

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